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Rasmus Peterson — 03/07/20

Big News! Generic name with .com extension eligible for trademark registration in US

Imagine that you have the “perfect” domain name, a brand that you’ve been using and promoting for some time, but since it is based on a generic word, anyone can use it, selling other services and goods. And at the same time, you are not allowed to protect it legally...

Now, this might be about to change, as Booking.com leads the way through a recent court decision that allows Booking.com to be registered as trademark in the USA.

On Tuesday June 30 the U.S Supreme Court’s 8-1 decision held that adding “.com” to a generic word can make the entire combination eligible for trademark protection. Marks consisting of a generic term and “.com” are not necessarily generic. Booking.com had previously applied for trademark registration, in 2011 and 2012, which was refused by the US Patent and Trademark Office. The reasoning was that the word “booking” is a generic term for a category of services, in this case, a term for booking something, and the adding of “.com” was not sufficient to convert it into a registrable trademark. But after Booking.com presented the results from a consumer survey, the U.S Supreme Court decided that Booking.com is not a generic term since it has “acquired distinctiveness” in the minds of the consuming public.

The word “booking” in itself is an unprotectable generic term. However, in this case when combined with “.com” it changed into a descriptive term that could be protected since it had acquired secondary meaning, which was evidenced by the survey.

The everlasting battle between allowing trademark protection for the benefit or trademark holders and consumers as opposed to providing unduly exclusive rights to a generic term this time favored the trademark holder. Booking.com argued that they needed to protect their brand from being misused by others for example in travel related products in airports etc. and that the brand had acquired distinctiveness.

A decision like this can, for many brand owners that have invested heavily in building their brands and acquiring distinctiveness, be considered a victory – such as Cars.com, Wine.com and Hotels.com. Will this US case have ripple effects for businesses across the internet?

The Booking.com case for sure expands the availability of trademark protection for generic domain names in the US, if it can be shown that they are in fact considered trademarks by consumers.

It can be noted that Booking.com holds trademark registrations for the wordmark BOOKING.COM in numerous other jurisdictions including an EU registration from 2011.